Ex Parte Pauley

Patent Trials and Appeals Board

Apr 16, 2019

14971789 - (D) (P.T.A.B. Apr. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/971,789 12/16/2015
26710 7590 04/18/2019
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael Pauley
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
155746.00003 6632
EXAMINER
COOPER, JOHN
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
04/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PAULEY
Appeal2018-001576
Application 14/971,789 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-7, 9-13, and 16-20. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Michael Pauley.
(Appeal Br. 2.)
2 The rejections of"[ c ]laims 8, 14-15, previously rejected under
35 U.S.C. 103 to Loughman in view of Deros (Claim 8) and Loughman,
NPL in view ofDeros (Claims 14-15)" have been withdrawn. (Answer 2.)
Appeal 2018-001576
Application 14/971, 789
CLAIMED SUBJECT MATTER
Appellant's "invention generally relates to the field of hunting and
more particularly to a hunting device with a pivoting fan or decoy support
and gun mount." (Spec. ,r 1.)
Claims 1, 9, and 16 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A hunting device, comprising:
a) a handle configured to allow a hunter to hold the hunting
device with one hand;
b) a decoy support, configured to hold a decoy, connected
to the handle so that a movement of the handle causes a
corresponding movement of the decoy support; and
c) a gun mount comprising a movable joint, wherein the
movable joint is connected to the handle to allow the decoy to
move in a first direction through the use of the handle while a
gun is simultaneously moved in a second direction, different
from the first direction, through the use of the gun mount.
REJECTIONS
Claims 1-3, 6, 16, 17, and 20 are rejected under 35 U.S.C. § I02(a)(l)
as anticipated by Loughman (US 2003/0106253 Al, pub. June 12, 2003).
Claims 4, 9-13, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Loughman and Primos,
http://web.archive.org/web/20150323204415/www.primos.com/products/
decoys/chicken-stick/ (last visited April 12, 2019) ("NPL").
Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over
Loughman.
Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Loughman and Deros (US 2012/0273631 Al, pub. Nov. 1, 2012).
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Appeal 2018-001576
Application 14/971, 789
Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Loughman, NPL, and Mausen (US 9,016,298 B2, iss. Apr. 28, 2015).
ANALYSIS
"[ A ]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference may still anticipate
if that element is 'inherent' in its disclosure. To establish
inherency, the extrinsic evidence "must make clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by
persons of ordinary skill." Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir.
1991). "Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient."
Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749 (quoting In re
Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (C.C.P.A.
1981)).
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
The Examiner finds that Loughman anticipates the invention claimed
in claim 1. (Final Action 2-3.) Specifically, the Examiner finds that
Loughman discloses "a handle configured to allow a hunter to hold the
hunting device with one hand (fig. 3, 8)" and "a gun mount (see fig. 3, 22 is
capable of performing as a gun mount) comprising a movable joint (see
fig. 1, joint between 5/20)." (Id. at 2.)
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Application 14/971, 789
Appellant disagrees and argues that "the 'pulling arm 8' in Loughman
would not function properly as a handle configured to allow the hunter to
hold the hunting device with one hand as recited in claims 1, 9 and 16."
(Appeal Br. 7.)
Figures 1 and 3 of Loughman are reproduced below.
!4
Fig. 1
Figure 1 (above) is a side perspective of a movable tail decoy apparatus.
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Application 14/971, 789
Fig: 3
Figure 3 (above) is a front view of a ground shaft including a partial view of
the tail shaft inserted therein.
Loughman discloses that "[ t ]he ground shaft 20 is comprised of a
tapered fin 21 and a second spring arm 22," that "[i]nstead of a tapered
fin 21, a Yz" inch diameter steel disc may be welded to the lower end of the
ground shaft 20," and that "the top of the ground shaft 20 includes a depth-
stop means 28 within or external to the ground shaft 20, sufficient in depth
and diameter to rotatably accommodate the conical-shaped end of the tail
shaft 5 therein." (Loughman ,r 36.) Loughman further discloses:
After the user has properly positioned the decoy apparatus 1 and
the decoy body 2 into the ground 3, as previously discussed and
as depicted in FIG. 1., the user unravels the pull line 9 to a length
that would allow him to maintain a hunting position . . . . Upon
assuming such a position, the user may pull on the pull line 9 to
activate the decoy apparatus 1. The pulling action causes the tail
shaft assembly 4 to rotate upon its pivot point within the ground
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shaft 20. Upon the commencement of this rotation, the coil
spring 7 connecting the first spring arm 6 to the second spring
arm 22, begins to elongate. The continuous tension created when
the coil spring 7 elongates, accompanied by controlled pulls and
releases on the pull line 9 by the user, provides for natural-in-
effect, side-to-side movement of the tail 14, 28.
(Id. ,I 37.)
With regard to the connection between Loughman's pulling arm 8
(and tail shaft 5, generally) and the second spring arm 22 (and ground
shaft 20, generally), the Examiner acknowledges that "it is unknown if the
components of Loughman would merely come apart due to gravity if the
device was held above the ground by element 8, as they may have a friction
fit, a locking mechanism not disclosed, etc.[] It is just as likely for a friction
fit to be present as it is for the components to simply separate with gravity.
(Answer 3; see also Appeal Br. 7.)
Claim 1 recites "[a] hunting device, comprising: a) a handle
configured to allow a hunter to hold the hunting device with one hand."
Claim 1 recites that the hunting device further comprises "a decoy support"
and "a gun mount comprising a movable joint." In other words, the recited
handle allows the hunter to hold with one hand the decoy support and the
gun mount comprising the movable joint.
A user holding handle/pulling arm 8 of Loughman would clearly also
be holding second spring arm 22 if the connection between tail shaft 5 and
ground shaft 20 included some type of interlocking mechanism, e.g., a
friction fit. However, the Examiner acknowledges that such a connection is
neither expressly nor inherently disclosed in Loughman. (See Answer 3.)
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Application 14/971, 789
(Id.)
Regardless, the Examiner determines:
It is not claimed how or where [Appellant's claimed] device is to
be used. The device of Loughman may be used on the ground,
where the pieces would not separate due to gravity. Applicant's
own invention appears to be designed to be used against the
ground, as in at least Paragraph 003 of the Applicant's
Specification says" ... handle may have a smooth bottom surface
to allow the handle to be slid along the ground during hunting
"
If the device disclosed in Loughman is used as shown in figure 1, i.e.,
with ground shaft 20 inserted into the ground such that the ground holds
ground shaft 20 in position, we would not necessarily agree that
handle/pulling arm 8 also holds ground shaft 20. However, if the end of
ground shaft 20 is merely resting on the ground, held in position by tail
shaft 5, which itself is held in position by a user holding handle/pulling
arm 8, then we would agree with the Examiner that a user holding
handle/pulling arm 8 is also holding gun mount/spring arm 22. In other
words, with the end of ground shaft 20 resting on the ground, and tail shaft 5
inserted in the other end of ground shaft 20 (as shown in figure 3), then it is
clear that handle/pulling arm 8 is configured to allow the user to hold the
device with one hand by holding only handle/pulling arm 8.
Appellant also argues that "Loughman [0035] teaches that the 'pulling
arm 8' is '[b ]elow and parallel to the first spring arm 6.' The first spring
arm thus would block the 'pulling arm 8' from being used as a handle by a
hunter." (Appeal Br. 7 .)
We do not find this argument persuasive. Rather, we agree with the
Examiner that "[i]t is clearly disclosed in Loughman th[at] handle 8 is longer
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than element 6 (see figure 3) as well as spaced apart from element 6,
allowing room for a user to grasp element 8." (See Answer 3--4.)
Appellant also argues that "[ t ]he 'pulling arm 8' of Loughman is
never taught, implied, suggested or illustrated as being used as a handle by
the hunter." (Appeal Br. 6.) Appellant, however, does not persuasively
argue why arm 8 of Loughman would not function as a handle. As
discussed above, resting the end of ground shaft 20 on the ground allows the
user to hold both the decoy support ( e.g., tail shaft 5) and the gun mount
(e.g., spring arm 22) by holding arm 8 with one hand. (See Answer 2-3.)
Appellant argues that "[t]he 'second spring arm 22' of Loughman is
never taught, implied, suggest or illustrated as being ( or being used as) a gun
mount." (Appeal Br. 10.)
Applying a broadest reasonable interpretation, we agree with the
Examiner that the claim term "gun mount" includes "a structure that
supports a gun." (See Answer 4, quoting https://www.merriam-
webster.com/dictionary/gun%20mount.) We also agree with the Examiner
that "Loughman discloses, in element 22, a structure capable of use as a gun
mount" and that "[ w ]ith no structural characteristics of the 'gun mount'
claimed, any structure having the structural limitations capable of
performing as a gun mount is considered to meet this limitation."
(Answer4.)
Appellant argues:
The "second spring arm 22" in Loughman would not function
properly as the claimed gun mount. It appears from Fig. 3 that
the first spring arm 6, the pulling arm 8 and the coil spring 7
would entirely block (or at the very least substantially hinder) a
gun from being mounted and/or moved on the "second spring
arm 22" ....
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Application 14/971, 789
(Appeal Br. 10.)
The Examiner answers, and we agree
that Figure 3 of Loughman is only one configuration, and since
the handle 8 is configured to rotate away from mount 22 ( as
shown in Figure 6) it would allow enough room for a user to rest
a gun on the top surface of 22, and pivot the fan utilizing handle
8 in a direction differing from a gun's pointed direction while
resting on 22. There are no structural limitations regarding the
size or shape of the gun mount required in the claims argued.
(Answer 4--5.) Moreover, first spring arm 6 and pulling arm 8 rotate with
tail shaft 5, so they may rotate away from second spring arm 22, leaving a
generally unobstructed location to place a gun barrel, e.g., between arm 22
and shaft 20, a location where spring 7 would not "entirely block ( or at the
very least substantially hinder)" gun movement. (See Appeal Br. 10.) In
short, Appellant does not persuasively argue why second spring arm 22
would not operate as a gun mount, e.g., to support a gun barrel. We also
agree with the Examiner that
if a gun were mounted on element 22, such as a barrel of a gun,
it appears from the figures a barrel could fit on the upper surface
of 22 and beneath the spring (see Figure 3) at any time element
8 was rotated away. Element 8 would still be free to rotate in
relation to element 22. Since there is a moveable joint between
elements 5 and 20 (see Figures 1, 3), a movement [i.e., rotation]
of element 5 ... would move a decoy fan (14), movement of
element 5 would be conducted via handle 8; and would leave the
gun mount 22 free to move independent of the handle 8 via the
moveable joint.
(Id. at 5.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1. Appellant argues independent claims 1, 9, and 16
together. Therefore, claims 9 and 16 fall with claim 1. See 3 7 C.F .R.
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Application 14/971, 789
§ 4I.37(c)(l)(iv). Appellant does not present separate arguments for
dependent claims 2-7, 10-13, and 17-20. Therefore, these claims fall with
claims 1, 9, and 16. See id.
DECISION
The Examiner's rejection of claims 1-3, 6, 16, 17, and 20 under
35 U.S.C. § 102(a)(l) is affirmed.
The Examiner's rejections of claims 4, 5, 7, 9-13, 18, and 19 under
35 U.S.C. § 103 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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